Friday, August 12, 2022

The McDonald case at the CAFC

This appeal arises from the decision of the Patent Trial and Appeal Board rejecting claims 1–7, 10, 12–16, and 18–38 (“the reissue claims”) of the application for reissue of U.S. Patent No. 8,572,111 (“the ’111 patent”). The Board rejected the reissue claims as based on a defective reissue declaration and further rejected claims 1–7, 10, 12–14, and 29–38 as impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution. Ex parte McDonald, No. 2019-002063, 2020 WL 2990970 (P.T.A.B. May 29, 2020). The Board subsequently denied a request for rehearing of its May 29, 2020, decision. J.A. 23–37. Mr. McDonald’s appeal to this court followed. For the reasons below, we affirm. In 2008, a patent application was filed for methods and systems related to the display of primary and secondary search results in response to search queries. J.A. 1113, 1148–53. Mr. John Bradley McDonald was named as the inventor and Masterfile Corporation was named as the assignee.1 J.A. 1113. The application’s original claims 1–9 and 19–21 did not recite a “processor” for conducting the claimed searches. J.A. 1148–53. The examiner rejected those claims as being directed to patent-ineligible subject matter under 35 U.S.C. § 101. J.A. 1208 (...) Mr. McDonald contends that the Board erred in rejecting reissue claims 1–7, 10, 12–14, and 29–38 under 35 U.S.C. § 251 as being an improper recapture of surrendered subject matter. Appellant’s Br. 15. He also contends that the Board erred by rejecting all the reissue claims as being based on an Inventor Reissue Declaration that was defective for failing to identify an error that is correctable through reissue. Id. We consider each of Mr. McDonald’s arguments in turn. Whether the recapture rule applies to a particular set of facts—that is, whether the claims of a reissue patent violate 35 U.S.C. § 251—is a question of law, which we review de novo. In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011). The underlying factual findings are reviewed for substantial evidence. Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1370 (Fed. Cir. 2001). (...) Here, the facts are simple. By first adding the “processor” limitations during prosecution of the original claims, then removing the exact terms “using a processor executing” and “using the processor executing,” Mr. McDonald seeks to reclaim a broader claim scope related to the surrendered subject matter that has now crept back into the reissue claim. Cf. J.A. 73–89, 1345–53. Notably, the reissue statute’s error requirement contemplates “inadvertence or mistake.” In re Youman, 679 F.3d at 1343. However, Mr. McDonald made no mistake. “Deliberate withdrawal or amendment of claims to obtain a patent cannot be said to involve the inadvertence or mistake contemplated by 35 U.S.C. § 251 . . . .” MBO Lab’ys, 602 F.3d at 1313 (cleaned up). Mr. McDonald deliberately amended the claim scope during prosecution of the parent application, explaining that the new “processor” limitations overcame the § 101 rejection by tying “the methods recited in claims 1 and 19 to a particular machine (i.e.[,] the processor),” which “impose[d] meaningful limits in the scope of claims 1 and 19.” J.A. 1353. He cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.

The Kamstrup case at the CAFC

Kamstrup A/S appeals a final written decision of the Patent Trial and Appeal Board. The Board found claims 1–15 of Kamstrup’s U.S. Patent No. 8,806,957 unpatentable as obvious or anticipated. On appeal, Kamstrup challenges the Board’s claim constructions. In addition, Kamstrup challenges the Board’s anticipation and obviousness determinations largely on the basis that the Board erred in rejecting Kamstrup’s claim construction arguments. We affirm. Kamstrup owns U.S. Patent No. 8,806,957 (the “’957 patent”). The ’957 patent describes ultrasonic flow meters and housings. ’957 patent abstract. The specification discloses that the meters are used for “calculating a consumed quantity of water, heat, cooling, gas or the like.” Id. at 1:27–30. Ultrasonic flow meters include “housing” to protect electronic components, such as a display or battery. Id. at 1:32–38. The ’957 patent is directed to “an ultrasonic flow meter housing in the form of a monolithic polymer structure being cast in one piece.” Id. at 1:58–60. It explains that “the present invention can be fabricated with a reduced number of steps compared to existing meters, since only a single step is used to form the monolithic polymer structure.” Id. at 2:6–9. (...) We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. See ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000) (citations omitted). Claim construction is ultimately a question of law that may be based on underlying factual findings. Teva Pharms. U.S.A., Inc. v. Sandoz, Inc., 574 U.S. 318, 332–33 (2015). Thus, we review the Board’s claim constructions de novo and review any underlying factual determinations for substantial evidence. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1278 (Fed. Cir. 2017). (...) Kamstrup argues that the Board erred in construing “cast in one piece” as a product-by-process claim element. A product-by-process claim is one in which a product is claimed, at least in part, by the “process by which it is made.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Product-by-process claims “enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made.” Id. “In determining validity of a product-by-process claim, the focus is on the product and not the process of making it. That is because of the . . . long-standing rule that an old product is not patentable even if it is made by a new process.” Greenliant Sys., 692 F.3d at 1268 (citations omitted). “As we recognized in Amgen, if the process by which a product is made imparts ‘structural and functional differences’ distinguishing the claimed product from the prior art, then those differences ‘are relevant as evidence of no anticipation’ although they ‘are not explicitly part of the claim.’” Id. (quoting Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1365–67 (Fed. Cir. 2009)). The specification, the prosecution history, and any extrinsic evidence may enlighten whether structural and functional differences exist. Amgen, 580 F.3d at 1365–67; Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1353–54 (Fed. Cir. 2016). (...) First, even if true, Kamstrup has not identified functional and structural differences between a structure “cast in one piece” and a structure manufactured using another method. Rather, the argument is merely that the claim element describes a manufacturing method with some inherent restrictions. Further, Kamstrup has not identified disclosure in the specification or prosecution history or extrinsic evidence evidencing structural and functional differences. Second, the alleged structural and functional difference that Kamstrup identifies is detached from the claims. The claims state that the structure should be “cast in one piece,” not cast in one mold. ’957 patent at 6:40–42 (emphasis added). The Board correctly found that the written description “focuses on reducing the number of steps required to fabricate the flow meter housing, not on casting in a single mold.” Axioma, 2021 WL 1235790, at *7 (citing ’957 patent at 1:55–57, 2:6–9). While certain figures of the written description, namely Figures 5A and 5B, depict a single mold, the Board correctly found that those embodiments are narrower than the claims—which do not require use of a single mold—and correctly declined to import narrower limitations from the specification to the claims. Id. Substantial evidence also supports the Board’s finding that the extrinsic evidence does not exclusively show that “cast in one piece” means “cast in one mold.” Id. at *8. Consequently, we hold that because Kamstrup fails to show that the process claimed imparts “structural and functional differences” distinguished from the prior art, it is not entitled patentable weight. Greenliant Sys., 692 F.3d at 1268.

Looking at UofC chemistry prof Lother Meyer in 2022; the Dembe story

While I was on a "zoon like" meeting comprised of former residents of Shorey House at the University of Chicago, the topic of UC chemistry prof Lothar Meyer arose. He had been an advisor to an undergrad member of our group.

Not fully appreciated was a "Lother Meyer" story that arose long after his death. The Chicago Maroon covered this story in 2019 with a headline

Grey City Seven Times Over: Life Along The Way to a Ph.D.
Not everyone who comes to the University of Chicago for a degree leaves with one.


One should read the full article, but the gist is that a (female) grad student finally got a Ph.D. more than 50 years after the work in the 1960s.

Here is a portion

Chemistry professor Philippe Guyot-Sionnest was one of the people tasked with this recommendation, along with Greg Engel, following Dembe’s most recent outreach to the University in 2018. He said that translating these notebooks of a doctoral candidate in 1971 into a recommendation for 2019 was a challenge, and he was initially skeptical that Dembe could get a Ph.D. 50 years after the fact. It wasn’t the lack of automation, he said—computers don’t generate knowledge—but Dembe had “no thesis, not even a manuscript of a thesis,” and besides, obtaining a doctorate in three years is virtually unheard of. “I expected there’s no way. I don’t believe anybody would give a Ph.D. to a person in two and a half years,” he said. But after finding that Lothar Meyer, Dembe’s adviser before his death, regularly graduated students in three years and looking at the work he and Dembe had pursued, Guyot-Sionnest’s skepticism began to fade. “It was an experiment that could be very, very cool. She was working on cooling liquid helium-3 to the lowest possible temperatures not knowing what they could expect to find but looking for the lowest temperature and some properties of magnetization. So they developed the technology and you could see in the notebook, the progression of the experiment, and it was clear they were making progress,” he said. A year after Dembe dropped out of UChicago, a Cornell team working on the same problem got what Guyot-Sionnest described as an “exciting result,” for which they later received the Nobel. Dembe wasn’t far off from the same result when she stopped her research.

Separately, as a "carbon" person, I note that Lothar Meyer also worked in carbon.


Nancy Colloquium on the Mechanism of Carbon Combustion, September 27-30, 1949


Saturday, August 06, 2022

Bradford loses to Smith at CAFC

From Smith vs. Bradford:

AOS Holding Company, which is wholly owned and controlled by A. O. Smith Corporation, owns U.S. Patent No. 8,375,897, titled “Gas Water Heater.” The two compa- nies (collectively, A.O. Smith), the only persons permitted to practice or profit from the invention embodied in the pa- tent, brought the present action against Bradford White Corporation in the U.S. District Court for the District of Delaware, alleging infringement of the patent’s claim 1 (the patent’s sole claim), which identifies a “method of in- terfacing a natural convection vent construction with a wa- ter heater.” ’897 patent, col. 6, lines 9–10. The district court held that Bradford White infringed claim 1 and that the claim was not invalid. Bradford White appeals both determinations. We affirm.

In its harmful-error argument, however, Bradford White contends that certain language in the district court’s findings and conclusions on the permitting limitation sug- gests a view—which Bradford White asserts is legal error, given the ’897 specification—that the “velocity or flow” of combustion products (in contrast to pressure) is simply im- material under the ’897 patent. Bradford White’s Br. at 36–38.We need not and do not decide whether Bradford White has adequately raised a legal argument along these lines, or whether it is correct in such an argument, for con- sideration independently of its challenge to the Category I venting claim construction, which we have rejected. Even if we so assume, we see no basis to set aside the court’s determination that the permitting limitation was met here. We read the district court’s opinion as relying inde- pendently on an evidentiary finding that reasonably as- signed little if any probative weight to the evidence regarding velocity presented in this case and instead found that the evidence based on pressure, together with the meaning of the Category I certification of the accused prod- ucts, proves satisfaction of the permitting limitation.

An inventor under US patent law must be a natural person

From Thaler v. Vidal:

This case presents the question of who, or what, can be an inventor. Specifically, we are asked to decide if an arti- ficial intelligence (AI) software system can be listed as the inventor on a patent application. At first, it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI sys- tems. In fact, however, we do not need to ponder these met- aphysical matters. Instead, our task begins – and ends – with consideration of the applicable definition in the rele- vant statute.

The United States Patent and Trademark Office (PTO) undertook the same analysis and concluded that the Patent Act defines “inventor” as limited to natural persons; that is, human beings. Accordingly, the PTO denied Stephen Thaler’s patent applications, which failed to list any hu- man as an inventor. Thaler challenged that conclusion in the U.S. District Court for the Eastern District of Virginia, which agreed with the PTO and granted it summary judg- ment. We, too, conclude that the Patent Act requires an “inventor” to be a natural person and, therefore, affirm.

The CAFC did not reach Chevron deference.

The sole issue on appeal is whether an AI software sys- tem can be an “inventor” under the Patent Act. In resolv- ing disputes of statutory interpretation, we “begin[] with the statutory text, and end[] there as well if the text is un- ambiguous.” BedRoc Ltd. v. United States, 541 U.S. 176, 183 (2004). Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.

Friday, July 29, 2022

Newman dissents in LG Electronics on the "facts" surrounding the error in the case

The introduction to the decision:

This appeal requires us to consider how to treat a prior art reference in which the alleged teaching of a claim element would be understood by a skilled artisan not to be an actual teaching, but rather to be an obvious error of a typographical or similar nature. LG Electronics Inc. appeals from the United States Patent Trial and Appeal Board’s final written decisions in a pair of inter partes review proceedings challenging claims 5 and 21 of U.S. Patent No. 6,844,990. In both proceedings, the Board found that LG had not shown the challenged claims were unpatentable. Because substantial evidence supports the Board’s finding that prior art disclosure critical to both of LG’s petitions for inter partes review was an apparent error that would have been disregarded or corrected by a person of ordinary skill in the art, we affirm.

Judge Newman, dissenting in part

The court today finds an “error of a typographical or similar nature” in the specification of the Tada reference and rules that because the error is “obvious” the erroneous portion of the Tada reference1 is eliminated as prior art. Maj. Op. at 16–17. I cannot agree that this error is typographical or similar in nature, for its existence was not discovered until an expert witness conducted a dozen hours of experimentation and calculation. Appx2428 (LG Elecs. Inc. v. ImmerVision, Inc., No. IPR2020-00179, (P.T.A.B. Oct. 1, 2020), Aikens Dep. 137:3–138:3, Ex. 1018). The appearance of a few of the same numbers in two different tables in the Tada reference provides no information as to which numbers and tables are correct and which may be in error. In contrast, a typographical or similar error is apparent to the reader and may conveniently be ignored without impeaching the content of the information. The error in the Tada reference cannot properly be deemed typographical or similar. The events that preceded the expert’s discovery of the error in the Tada reference cannot be ignored. The possibly erroneous numbers in the Tada tables were not noticed by any of the patent attorneys throughout the prosecution of Tada’s U. S. application. The now “obvious” error was not noticed by the patent examiner during a complex prosecution in which claims were amended and prior art distinguished. The purportedly “typographical or similar” error was not included in the Certificate of Correction that was obtained for typographical errors in the issued Tada patent. This error was not noticed by two distinct Patent Trial and Appeal Boards in instituting these two inter partes review (“IPR”) petitions, despite the technological expertise of the Board. The error in Tada Table 5 was not corrected anywhere, even after 20 years of publication. Not until an expert witness conducted experiments and compared the U. S. application with the Japanese Priority document2 did anyone discover the possibly erroneous numbers in Table 5. Appx2422–2430; Appx3030–3042. The specifics of what led the expert, Mr. Aikens, to discover the erroneous values in Table 5 also cast doubt on whether the error may be deemed “obvious and apparent.” Mr. Aikens testified that he had fully modeled Tada’s Embodiment 3—relying on data from Table 5—without noticing the error. Appx2421–22 (Aikens Dep. 130:8–22). It was only after his model was completed that he noticed the lens created a distorted image, leading him to presume there was perhaps some error in Tada. Appx2422 (Aikens Dep. 131:3–7). At this point in his experimentation, he did not know what the error was, and certainly did not know how to correct the error; he only suspected that an error existed somewhere. Appx2423 (Aikens Dep. 132:2–10). Upon realizing there was likely an error, Mr. Aikens undertook to discover it. Id. at 132:7–10 (“I wanted to understand how this lens could be so wrong and be in the patent. It just didn’t make sense to me.”). Mr. Aikens testified that he required several additional hours to figure out if there actually was an error in the reference and what that error was. Id. at 132:11–13. First, Mr. Aikens observed that the physical surface shape of his Embodiment 3 lens model did not match the example lens depicted in Tada’s Figure 11. Appx2424 (Aikens Dep. 133:11–14); Appx3042 (LG Elecs. Inc. v. ImmerVision, Inc., No. IPR2020-00179, (P.T.A.B. Aug. 4, 2020), Aikens Decl. ¶ 74, Ex. 2009). This suggested that an error existed, but not where the error was or how to correct it. Mr. Aikens then performed various tasks such as comparing the diagrams of the aberrations, astigmatism, and distortion for Embodiment 3 to his model, and fully modeling two other embodiments—Embodiment 1 and Embodiment 2. Appx2425 (Aikens Dep. 134:12–15). None of these steps showed where the purported “obvious error” was located. Only after modeling the other lens embodiments did Mr. Aikens finally observe that the aspherical values from Table 3, which correspond to Tada’s Embodiment 2, “were exactly the same as in Table 5.” Id. at 134:18–19. Mr. Aikens testified that at this point of his experimentation he suspected there was an error in the aspherical values in Table 5, but he had yet to determine what was in error. Id. at 134:19–21. To investigate further, Mr. Aikens compared the sag table generated from his lens model with sag Table 6 from the Tada reference. He found they did not match, indicating that an error existed; however, he still did not know what the error was, nor how to correct it. Appx2425–26 (Aikens Dep. 134:22–135:4); Appx3032–35, Appx3042 (Aikens Decl. ¶¶ 60–62, 74). Mr. Aikens then compared the values in Table 9 to Table 5 and noticed that upon performing the required calculations, the aspherical values did not match between these two tables. Appx2426– 27 (Aikens Dep. 135:9–136:15). It was here, for the first time, that Mr. Aikens testified that he could confirm there actually was an error in the Tada reference. Id. at 136:9– 10. At this juncture Mr. Aikens felt confident that Table 5 contained erroneous information, but he still did not have the information to correct it. Appx2426–27 (Aikens Dep. 135:21–136:1) (“Unfortunately, Tada didn’t include a constraint on his A10 term so that I had to optimize to find.”). Mr. Aikens testified that he was finally able to correct and confirm the error when he obtained the Japanese Priority Application. Appx2420 (Aikens Dep. 129:7–11); Appx3042 (Aikens Decl. ¶ 74). The Japanese application had the correct aspherical values in Table 5, as confirmed by a skilled expert in this technology, after many hours of corrective effort that included fully modeling three separate embodiments of the lens. In sum, the error was not of “typographical or similar nature.” The facts of this case readily distinguish it from In re Yale, 434 F.2d 666 (CCPA 1970), where our predecessor Court of Customs and Patent Appeals found that the inclusion of the molecule CF3CF2CHClBr in a list of anesthetics was an obvious error. In Yale the CCPA explained that CF3CF2CHClBr was not a known compound and that the obviously intended compound was CF3CHClBr, a wellknown anesthetic. This error was acknowledged by the authors of the article. As the panel majority recounts, “any number” of the pieces of evidence mentioned by the CCPA in Yale would “‘individually or cumulatively . . . alert one of ordinary skill in the art to the existence’ of the error.” Maj. Op. at 14 (quoting Yale, 434 F.2d at 669). However, the evidence in Yale did not require calculations or experimentation. Yale, 434 F.2d at 667. The same cannot be said about the error in Tada, for without the Japanese Priority Application, there is no source of the correct information. In Tada, the error in Table 5 is not discoverable unless measurements are conducted, the embodiments are recreated, equations are recalculated, and computations are performed. Without performing these operations, the identity of a few values in both the tables does not establish error. Moreover, the tables do not suggest which table might be incorrect. As Mr. Aikens demonstrated, without modeling Embodiment 3, Table 5 cannot be compared to sag Table 6 or Figs. 11–15. In contrast, in Yale it was obviously an error to replace the known chemical anesthetic compound CF3CHClBr in Fig. 1 with the unknown chemical compound CF3CF2CHClBr in Fig. 3 and list both compounds as having the same property. The CCPA reasoned that a chemist of ordinary skill would deem it extremely unlikely that these two chemicals would have the same LogPf (partial pressure) value. Yale, 434 F.2d at 667. Although the panel majority finds analogy in the view that it is highly unlikely that the Tada embodiments would have the same aspherical values, Maj. Op. at 16, such that the listing of the same values is an obvious error, there is no intrinsic reason why two different lenses could not have the same aspherical values. As Mr. Aikens remarked, “[a]nd so I thought, okay, well, maybe there’s a typo on the – on the aspherics, or maybe Tada is not very good.”). Appx2425 (Aikens Dep. 134:10–12). Even the Tada patent states that “[t]he basic structure of a lens system of the third embodiment is substantially the same as that of the second embodiment. Numerical data regarding the third embodiment is shown in table 5 below.” ’999 Patent col. 8 ll. 59–64. That Table 3 and Table 5 have some of the same aspherical values does not readily alert a person of ordinary skill that Table 5 contains an obvious error of “typographical or similar nature.” The facts in Yale are not readily analogous. An important consideration in Yale was that the molecule CF3CF2CHClBr was not a known chemical compound at the time. The CCPA explained that the inclusion on a table of known anesthetics of a compound that did not exist would be recognized as an error, as was shown in correspondence. Yale, 434 F.2d at 668–69. I agree with the panel majority that Yale establishes the correct standard to determine if an error would be obvious to a person of ordinary skill in the field. However, I do not agree with the majority’s application of this standard to the facts herein. An “obvious error” should be apparent on its face and should not require the conduct of experiments or a search for possibly conflicting information to determine whether error exists. When a reference contains an erroneous teaching, its value as prior art must be determined. The error in the Tada reference is plainly not a “typographical or similar error,” for the error is not apparent on its face, and the correct information is not readily evident. It should not be necessary to search for a foreign document in a foreign language to determine whether there is an inconsistency in a United States patent. The foundation of the “typographical or similar” standard is that the error is readily recognized as an error. I am concerned that we are unsettling long-standing law, and thus I respectfully dissent in part.

Thursday, July 28, 2022

CAFC finds blatant gamesmanship in Real-time case

*** Although Realtime was done with Delaware, it was not done with Netflix. The next day, Realtime started fresh, re-asserting the same six patents against Netflix, this time in the Central District of California—despite having previously informed the Delaware court that transferring the Delaware action across the country to the Northern District of California would be inconvenient and an unfair burden on Realtime. Netflix then simultaneously moved for attorneys’ fees and to transfer the California actions back to Delaware. Prior to a decision on either motion, Realtime again avoided any court ruling by voluntarily dismissing its case.


Netflix then renewed its motion for attorneys’ fees for the California actions as well as the related Delaware action and inter partes review proceedings. The district court awarded fees for both California actions pursuant to § 285 and, in the alternative, the court’s inherent equitable powers. The district court declined to award fees for the related Delaware action or inter partes review proceedings under either § 285 or Federal Rule of Civil Procedure 41(d).1 Realtime now appeals the court’s fee award for the California actions and Netflix cross-appeals the court’s denial of fees for the related proceedings. Because we hold that the district court did not abuse its discretion in awarding fees pursuant to its inherent equitable powers or in denying fees for the related proceedings, we affirm. We need not reach the question of whether the award also satisfies the requirements of § 285.

(///) The district court awarded Netflix attorneys’ fees for both California actions pursuant to its inherent equitable powers. Fees Award at *11. The district court reasonably found Realtime’s conduct in the California actions “improper,” “exceptional,” and “totally unjustified.” Id. at *6. When Realtime renewed its lawsuit in California, Realtime had in hand: (1) the Delaware magistrate judge’s report recommending the court find that claims of four asserted patents were ineligible under § 101, (2) the Delaware judge’s ruling in parallel actions that five related patents (that Realtime claimed helped its cause) were themselves patent-ineligible, and (3) Patent Trial and Appeal Board decisions instituting inter partes review proceedings, indicating that Netflix had demonstrated a reasonable likelihood of success in proving at least one claim of each patent unpatentable. Id. The district court also noted that Realtime knew, upon filing the California actions, that the Central District of California had recently “reached a more favorable ruling regarding the patent eligibility of [the same four patents] in another case.” Id. at *7. Realtime undoubtedly realized that by refiling in California, it could effectively erase the Delaware magistrate judge’s fulsome and compelling patent-ineligibility analysis and findings. In addition to Realtime’s efforts to avoid an adverse patent-eligibility determination, Realtime also resisted transfer back to the forum it originally chose. Contrary to earlier arguments that litigation should remain in Delaware because litigating in California would be inconvenient, id., and, in fact, “unfair,” J.A. 3813–14, Realtime refiled in California. It then fought transfer back to Delaware, arguing that relevant witnesses and evidence are in California and that Delaware would not be more convenient. J.A. 3365–68. Realtime also argued that judicial economy weighed against transfer back to Delaware despite that district court’s experience with, and now-wasted substantive analysis of, the asserted patents. J.A. 3369–70; see also Fees Award at *8. The district court correctly highlighted these contradictions to support a finding of “impermissible forum shopping.” Ultimately, Realtime was aware “that its lawsuit in Delaware was undeniably tanking,” making its decision to “run off to another jurisdiction in hopes of getting a more favorable forum [] totally unjustified,” and “improper.” Fees Award at *6–7.


Accordingly, there is nothing erroneous about the conclusion that Realtime “impermissibly” and “unjustifi[ably]” engaged in forum-shopping in attempt to avoid or delay an adverse ruling. Id. at *6–7. The blatant gamesmanship presented by the facts of this case constitutes a willful action for an improper purpose, tantamount to bad faith, and therefore within the bounds of activities sanctionable under a court’s inherent power in view of the Ninth Circuit’s standard. Identifying no legal error or clearly erroneous fact findings, we hold that the district court did not abuse its discretion in awarding fees pursuant to its inherent equitable powers. ***

Saturday, June 18, 2022

What happens when a patent expires during proceedings? Dissent brings up "unclean hands"

from :

In 2017, we affirmed-in-part, vacated-in-part, and remanded the Patent Trial and Appeal Board (Board) decisions in inter partes reexamination proceedings for U.S. Patent Nos. 8,023,290 (’290 patent) and 7,272,021 (’021 patent). Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1312 (Fed. Cir. 2017) (SynQor II). Before the Board issued its remand decisions, the ’021 patent expired. Patent Owner SynQor appeals, asking this court to vacate the Board’s decision rejecting claims 49 and 50 of the ’021 patent pursuant to United States v. Munsingwear, 340 U.S. 36 (1950), whereby an appellate court can vacate a lower court’s or administrative agency’s decision when review of that decision on the merits becomes moot “by the vagaries of circumstance.” U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 25 (1994). Recently, in SynQor, Inc. v. Vicor Corp., 988 F.3d 1341 (Fed. Cir. 2021) (SynQor IV), we granted SynQor’s request for vacatur of a Board decision rejecting claims 34–38 of related U.S. Patent No. 7,072,190 (’190 patent). Because the request for vacatur in this case is materially identical to the request in SynQor IV, we similarly vacate the Board’s remand decision regarding claims 49 and 50 of the ’021 patent.

Judge Lourie dissented:

I respectfully dissent from the vacatur of the Board’s decision rejecting claims 49 and 50. The majority states that this case is “materially indistinguishable” from SynQor IV because the patent in both cases expired before the Board’s appeals process was completed. Majority at 6. I question that conclusion. In SynQor IV, the Board first rejected new claim 34 two years before the patent expired. In contrast, in this case, the patent expired before the Board rejected new claims 49 and 50. That makes a big difference when SynQor comes before us seeking an equitable remedy.

Vacatur is an equitable remedy. See U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 26 (1994); see also 15 James W. Moore et al., Moore’s Federal Practice § 101.97 (Matthew Bender 3d ed. 2021) (“The burden is on the party seeking vacatur to demonstrate equitable entitlement to the remedy.”). And equity requires clean hands. See Gilead Scis, Inc. v. Merck & Co., Inc., 888 F.3d 1231 (Fed. Cir. 2018) (the doctrine of unclean hands “closes the doors of a court of equity to one tainted with inequitableness or bad faith relative to the matter in which he seeks relief”) (quoting Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814–15 (1945)). Here, 13 months had passed during which the ’021 patent appeal was pending before the Board and SynQor did not notify the Board that the patent had expired. It only did so a month after the Board’s decision. That looks suspiciously like a strategic decision to lay low until the decision and, only if one lost, seek vacatur. That is not happenstance; it looks like either gamesmanship or negligence, and rewarding that conduct with vacatur is not equity. The Board was obligated to expand scarce resources in adjudicating the appeal before it, when SynQor could have been upfront with the Board and informed it that, in its view, the appeal was moot. For the above reasons, I dissent from the majority’s decision to vacate a decision that should be affirmed.

Monday, June 13, 2022

Appellant wins in L'Oreal case

Of prosecution history

We hold that this prosecution history requires that the wherein clause’s reference to the recited concentrations being “applied to the dermal cells” be read as referring to concentrations of the composition applied to the skin’s surface. The amendments and comments clearly convey that UMass was continuing the pre-amendment reliance on the concentration in the composition before application to the skin, rather than introducing a materially different, unexplained notion of concentration, no longer assessed before contact with the object of application. UMass’s proposed construction now cannot fairly be squared with the understanding that both it and the examiner expressed during prosecution, and on which skilled artisans are entitled to rely. UMass makes various counterarguments concerning the prosecution history, but all are unavailing. As an initial, legal matter, we reiterate that this is not a case where the prosecution history must meet the standard of clear and unmistakable disclaimer for overcoming an otherwiseplain meaning, contrary to UMass, the Board, and the district court’s framings. See UMass Reply Br. 27; J.A. 2808– 10; J.A. 3721 (Hearing Tr. at 58:4–7). We need not decide whether that standard is met here. Because the meaning of the relevant claim language is not plain, but rather ambiguous for the reasons described in Section II.A, we can look to the prosecution history to “inform[] the meaning of the disputed claim phrase and address[] an ambiguity otherwise left unresolved.” Personalized Media Communications, 952 F.3d at 1345; see also SoundView Innovations, LLC v. Hulu, LLC, 33 F.4th 1326, 1332–35 (Fed. Cir. 2022).


As a result of our new construction, the district court’s subsequent indefiniteness ruling must be vacated, and we remand for the district court to conduct any further proceedings that are necessary. Although L’Oréal proposes that, if we reverse the claim construction of the wherein clause, we could directly enter a judgment of non-infringement, we leave it to the district court to determine how to proceed under the new construction. See L’Oréal Response Br. 45–46 & n.24 (contending that UMass conceded noninfringement); UMass Reply Br. 21 (disputing concession); Oral Arg. at 18:45–19:10, 48:13–49:16 (also discussing existence of invalidity counterclaims).

Of abuse of discretion

Here, the district court abused its discretion in not allowing jurisdictional discovery on the record before it. In front of the magistrate judge, UMass made more than clearly frivolous, bare allegations that L’Oréal S.A. was subject to personal jurisdiction, either because L’Oréal S.A. introduced the accused products into the stream of commerce or because L’Oréal USA operated as L’Oréal S.A.’s agent in certain potentially relevant respects. See Plaintiffs’ Memorandum of Law in Opposition to Defendant L’Oréal S.A.’s Motion to Dismiss at 1–17, University of Massachusetts v. L’Oreal S.A., No. 1:17-cv-00868 (D. Del. Dec. 8, 2017), ECF No. 27. For example, as potentially relevant to both theories, UMass put forward evidence buttressing the possibility that L’Oréal S.A. researched and developed the addition of adenosine to skin-care products, J.A. 263–69; J.A. 1070; J.A. 1073–77, and L’Oréal S.A.’s own submitted declaration indicated that L’Oréal S.A. may have licensed that technology to L’Oréal USA, J.A. 553–54 (Rabinowitz Decl. ¶ 6) (“From time to time, L’Oréal S.A. and L’Oréal USA engage in the sale of goods or services between the two companies.”). For its part, L’Oréal S.A. did not specifically deny allegations that it developed and licensed the relevant technology to L’Oréal USA, stating only that “L’Oréal S.A. does not directly develop, sell, market, or advertise to consumers in Delaware any of the products at issue in this action,” without making it clear what it meant by “directly develop.” J.A. 553–54 (Rabinowitz Decl. ¶ 6).2

Because this evidence raises the possibility that discovery might have uncovered the requisite contacts under our precedent, see, e.g., Nuance Communications, Inc. v. Abbyy Software House, 626 F.3d 1222, 1233–34 (Fed. Cir. 2010); Celgard, LLC v. SK Innovation Co., 792 F.3d 1373, 1379– 82 (Fed. Cir. 2015), we vacate the jurisdictional determinations. UMass is entitled to jurisdictional discovery before any jurisdictional determination, if one remains necessary, is made.

Saturday, June 11, 2022

Tiger Lily Ventures loses trademark appeal at CAFC

Some background

Until 2008, Lehman Brothers1 was one of the largest investment banks in the United States, with hundreds of billions of dollars in assets under management and more than 25,000 employees in offices worldwide. Lehman Brothers owned trademark rights in connection with its name, including a number of federal trademark registrations for the standard character mark LEHMAN BROTHERS. Immediately after Lehman Brothers filed for bankruptcy in 2008, it sold several of its businesses and other assets to Barclays for approximately $1.5 billion. As part of that sale, Lehman Brothers assigned to Barclays all of its LEHMAN BROTHERS trademarks and accompanying goodwill. Shortly thereafter, Barclays granted Lehman Brothers a worldwide, non-exclusive license to use the LEHMAN BROTHERS trademarks in connection with Lehman Brothers’ retained and continuing businesses and operations. The term of the license was two years for use in connection with Lehman Brothers’ investment banking and capital markets businesses and perpetual for use in connection with other Lehman Brothers businesses and operations. Over the years that followed, however, Barclays allowed all of its acquired LEHMAN BROTHERS trademark registrations to expire. On March 6, 2013, Tiger Lily, a company with no corporate affiliation to Lehman Brothers or Barclays, filed Application No. 85/868,892 for registration of the standard character mark LEHMAN BROTHERS for beer and spirits. A few months later, on October 2, 2013, Barclays filed Application No. 86/081,143 to register the standard character mark LEHMAN BROTHERS for use in connection with various financial services. And not long after that, on June 2, 2014, Tiger Lily filed Application No. 86/298,069 for registration of the same standard character LEHMAN BROTHERS mark for bar services and restaurant services.


In view of its findings, the Board sustained Barclays’ oppositions on the grounds of likelihood of confusion but dismissed Barclays’ oppositions on the grounds of false suggestion of a connection, dilution, and lack of bona fide intent. Id. And the Board dismissed Tiger Lily’s opposition in its entirety. Id. Tiger Lily appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).


Tiger Lily attempts to focus on the fact that the bankruptcy proceedings will eventually end and that Lehman Brothers is involved in the type of bankruptcy from which it will not emerge as a continuing enterprise. See, e.g., Oral Arg. at 3:39–4:22. But we are unpersuaded that these facts are material to the issue at hand. Regardless whether Lehman Brothers will cease to exist after the bankruptcy concludes, it is not disputed that the bankruptcy has not yet concluded, and the record lacks clear evidence as to when any such conclusion is expected. Thus, any evidence about Lehman Brothers’ intentions after the conclusion of the bankruptcy proceedings relates only to the second element of Tiger Lily’s abandonment claim—i.e., whether Barclays intends not to resume use of the LEHMAN BROTHERS mark. As discussed above, Tiger Lily has failed to show that use of the mark has yet been discontinued, and indeed Tiger Lily appears to concede that it has not. Evidence relating to the second element, post-bankruptcy use, is thus irrelevant. Additionally, separate from Lehman Brothers’ use of the mark, the evidence shows that Barclays itself has continued to use the LEHMAN BROTHERS mark.

(...) Of interest

Turning to Tiger Lily’s arguments concerning the similarity of the goods and services, Tiger Lily emphasizes abstract distinctions between whisky on the one hand and financial services on the other. For example, Tiger Lily asserts that the consuming public would not assume that the Lehman Brothers company began “selling whisky commercially or open[ed] up a bar or a restaurant,” see Appellant Br. at 30. But that assertion, while likely true, is also irrelevant; the relevant inquiry considers “if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1724 (T.T.A.B. 2007).3 In short, Tiger Lily’s arguments ignore the context-specific realities of the consumer markets in which the parties’ goods and services are offered. Barclays is correct that in modern consumer markets commercial trademarks are often licensed for use on products that may differ from the original source of the trademark. See, e.g., L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1889 (T.T.A.B. 2008) (“It is common knowledge, and a fact of which we can take judicial notice, that the licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life.”). In this regard, the Board relied on Barclays’ extensive evidence showing examples of companies that have promoted financial services through use of their trademarks in connection with alcohol, food, and beverages. See, e.g., Board Decision, slip op. at 43–46 n.68. And the evidence demonstrates that, in marketing its own banking products and services, Lehman Brothers used its LEHMAN BROTHERS mark in connection with products that are related to whisky and alcoholic beverages. See, e.g., J.A. 17664 (Lehman Brothers Whisky Decanter), J.A. 17696 (Lehman Brothers Beverage Cooler). As a legal principle, because the LEHMAN BROTHERS mark has achieved a high degree of fame, it is afforded a broad scope of protection. See Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002); see also Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 353 (Fed. Cir. 1992) (“[A] mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark.”). Our precedent makes clear that a famous mark “casts a long shadow which competitors must avoid.” Kenner Parker Toys, 963 F.2d at 353 (citing Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 1074 (Fed. Cir. 1989)). In this case, it may very well be true that Tiger Lily is not actively “confusing” consumers into believing that Lehman Brothers or Barclays is selling whisky. See, e.g., Oral Arg. 9:12– 9:20 (Tiger Lily arguing that there is no “deception” and that there are no “consumers that stand to be confused”). But the evidence shows that, by referencing the Lehman Brothers history in its marketing materials and by copying Lehman Brothers’ logo, Tiger Lily is seeking to take advantage of the widespread consumer recognition of Barclays’ LEHMAN BROTHERS mark. Tiger Lily attempts to draw a distinction between “consumer recognition” as compared with “goodwill,” and argues that it is actually trying to trade on the “bad will” associated with the LEHMAN BROTHERS mark. See Oral Arg. at 9:54–9:59; 11:01– 11:15. But we find no legal support for these subtle distinctions, and we thus find that Tiger Lily’s attempts to capitalize on the fame of the LEHMAN BROTHERS mark weighs in favor of finding a likelihood of confusion. We also agree with Barclays that Tiger Lily is placing undue emphasis on a supposed lack of actual confusion. Tiger Lily’s evidence on this point appears to consist of two vague unsupported paragraphs in a declaration from a single witness who generally asserted that the whisky has been selling since early 2016 in the United Kingdom and the United States without providing details to demonstrate the scope of the sales activity. See J.A. 25580. The mere fact that Tiger Lily’s whisky customers have not affirmatively said that they are confused by “ask[ing] for a banking product or service” or “indicat[ing] that they felt deceived,” see id., does not prove that customers have not in fact been confused about whether the whisky is affiliated with Lehman Brothers; the “absence of evidence is not always evidence of absence.” See, e.g., Int’l Ass’n of Machinists & Aero. Workers, Local Lodge 964 v. BF Goodrich Aero. Aerostructures Grp., 387 F.3d 1046, 1055 (9th Cir. 2004).

note also Supreme Court Passes on Tiger Trademark Dispute link and